Trials@uspto.gov
`571.272.7822
`
` Paper No. 61
`
`Entered: August 12, 2020
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PRECISION PLANTING, LLC and AGCO CORP.,
`Petitioner,
`
`v.
`
`
`
`
`
`DEERE & COMPANY,
`Patent Owner.
`____________
`
`IPR2019-01052 (Patent 9,820,429 B2)
`IPR2019-01054 (Patent 10,004,173 B2)1
`____________
`
`
`Before BARRY L. GROSSMAN, JAMES A. TARTAL, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Petitioner’s Unopposed Motion to Seal and
`for Entry of Protective Order
`37 C.F.R. §§ 42.14, 42.54
`
`
`1 We exercise our discretion to issue one order to be filed in each
`proceeding. The parties may use this style heading only if the paper
`includes a statement certifying that the identical paper is being filed in each
`proceeding listed in the caption.
`
`
`
`
`571.272.7822
`
` Paper No. 61
`
`Entered: August 12, 2020
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PRECISION PLANTING, LLC and AGCO CORP.,
`Petitioner,
`
`v.
`
`
`
`
`
`DEERE & COMPANY,
`Patent Owner.
`____________
`
`IPR2019-01052 (Patent 9,820,429 B2)
`IPR2019-01054 (Patent 10,004,173 B2)1
`____________
`
`
`Before BARRY L. GROSSMAN, JAMES A. TARTAL, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Petitioner’s Unopposed Motion to Seal and
`for Entry of Protective Order
`37 C.F.R. §§ 42.14, 42.54
`
`
`1 We exercise our discretion to issue one order to be filed in each
`proceeding. The parties may use this style heading only if the paper
`includes a statement certifying that the identical paper is being filed in each
`proceeding listed in the caption.
`
`
`
`
`
`IPR2019-01052 (Patent 9,820,429 B2)
`IPR2019-01054 (Patent 10,004,173 B2)
`INTRODUCTION
`I.
`In the above-captioned cases, Petitioner filed an unopposed motion to
`seal confidential versions of Petitioner’s Reply to Patent Owner’s Response
`(Paper 58) and Exhibits 1045, 1046, 1048, 1049, 1050, 1052, 1054, 1069,
`1131, and 1135. Paper 56 (“Motion” or “Mot.”). 2 Petitioner also moves to
`enter the Board’s Default Protective Order, filed in the Motion as Appendix
`A (“Protective Order”). Mot. 5–6.
`For the reasons discussed below, Petitioner’s Motion is granted.
`Because Patent Owner previously showed good cause to seal Exhibit 2033
`(see Paper 35, 6–8), we also now seal the confidential version of Exhibit
`2033 under the Protective Order.
`II. MOTION FOR ENTRY OF PROTECTIVE ORDER
`Relevant to this Motion, the Office Patent Trial Practice Guide states:
`4. Protective Orders: A party may file a motion to seal where the
`motion contains a proposed protective order, such as the default
`protective order in Appendix B. 37 C.F.R § 42.54. Specifically,
`protective orders may be issued for good cause by the Board to
`protect a party from disclosing confidential information.
`37 C. F. R. § 42.54. Guidelines on proposing a protective order
`in a motion to seal, including a Default Protective Order, are
`provided in Appendix B. The document or thing will be
`protected on receipt of the motion and remain so, pending the
`outcome of the decision on motion.
`Consolidated Office Patent Trial Practice Guide (“Consolidated Practice
`Guide”), November 2019, at 19–20. 3
`Petitioner states “[t]he parties hereby certify that they accept and
`agree to the terms of the Board’s default protective order,” and seeks entry
`
`
`2 We cite to the papers and exhibits filed in IPR2019-01052. Similar papers
`and exhibits were filed in IPR2019-01054.
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
`
`
`
`IPR2019-01052 (Patent 9,820,429 B2)
`IPR2019-01054 (Patent 10,004,173 B2)
`of the Protective Order filed as Appendix A. Mot. 5–6, App. A, 1–6. This
`Protective Order is entered in each of the above-identified proceedings and
`will now apply to all documents entitled to confidentiality in these
`proceedings.
`
`III. MOTION TO SEAL
`Petitioner moves to seal Petitioner’s Reply to Patent Owner’s
`
`Response (Paper 58) and Exhibits 1045, 1046, 1048, 1049, 1050, 1052,
`1054, 1069, 1131, and 1135. Mot. 1. Petitioner asserts that “Patent Owner
`does not oppose this motion.” Id.
`
`The record for an inter partes review shall be made available to the
`public, except as otherwise ordered, and a document filed with a motion to
`seal shall be treated as sealed until the motion is decided. 35 U.S.C.
`§ 316(a)(1); 37 C.F.R. § 42.14. There is a strong public policy that favors
`making information filed in inter partes review proceedings open to the
`public. See Garmin International v. Cuozzo Speed Technologies, LLC,
`IPR2012-00001, Paper 34 (PTAB March 14, 2013) (discussing the standards
`of the Board applied to motions to seal). Unlike in district court, where a
`party routinely will determine whether a document is produced under the
`terms of a district court protective order, in an inter partes review, “the
`default rule is that all papers . . . are open and available for access by the
`public.” See Garmin at 2. The standard for granting a motion to seal is
`“good cause.” 37 C.F.R. § 42.54. The moving party bears the burden of
`showing that the relief requested should be granted. 37 C.F.R. § 42.20(c).
`That includes showing that the information is truly confidential, and that
`such confidentiality outweighs the strong public interest in having an open
`record. See Garmin at 3. Further, redactions to documents should be
`limited to the minimum amount necessary to protect confidential
`
`3
`
`
`
`
`
`IPR2019-01052 (Patent 9,820,429 B2)
`IPR2019-01054 (Patent 10,004,173 B2)
`information, and the thrust of the underlying argument or evidence must be
`clearly discernible from the redacted versions. See Scheduling Order, Paper
`20, 2–3; see also Consolidated Practice Guide at 91–92.
`Exhibits 1050, 1052, and 1054
`A.
`Regarding Exhibits 1050, 1052, and 1054, Petitioner states:
`Exhibit 1050 is an internal Deere document that Deere
`produced in [the related district court proceeding, Deere & Co.
`v. AGCO Corp. & Precision Planting, LLC, No. 1:18-cv-
`00827-CFC (D. Del. Feb. 25, 2019)]. It is a Deere internal
`competitive product analysis. Deere marked the document
`“John Deere Confidential” and contends that the document
`contains confidential Deere information. Patent Owner
`maintains that the entire exhibit is confidential.
`Exhibit 1052 is a document produced by Deere in the above-
`referenced district court proceeding. It refers to Deere business
`strategy and potential business acquisitions. Deere marked the
`document as “Confidential” and contends that the document
`contains Deere confidential information. Patent Owner
`maintains that the entire exhibit is confidential.
`Exhibit 1054 is a document produced by Deere in the above-
`referenced district court proceeding and comprises a
`confidential business communication between an employee of
`one of Deere’s dealers and employees of Deere regarding
`business strategy. Patent Owner maintains that the entire
`exhibit is confidential.
`Mot. 3–4.
`
`
`Upon reviewing Exhibits 1050, 1052, and 1054, we agree with
`Petitioner that the information at issue is confidential business information.
`See 37 C.F.R. § 42.2 (“Confidential information means trade secret or other
`confidential research, development, or commercial information.”).
`Considering the sensitivity of the information and the potential competitive
`harm were the information disclosed publicly at this time, we determine
`good cause to seal the documents has been shown. Further, each of Exhibits
`
`4
`
`
`
`IPR2019-01052 (Patent 9,820,429 B2)
`IPR2019-01054 (Patent 10,004,173 B2)
`1050, 1052, and 1054 appears to contain confidential business information
`in its entirety. Accordingly, we grant the Motion to seal Exhibits 1050,
`1052, and 1054, which shall be subject to the Protective Order.
`Exhibits 1045, 1046, 1048, 1049, and 1069
`B.
`Exhibits 1045, 1046, 1048, 1049, and 1069 are deposition transcripts
`from the related district court proceeding. Mot. 2–4. According to the
`Motion, each transcript contains “confidential Deere information relating to
`Deere’s product design and development process.” Id. Upon reviewing
`Exhibits 1045, 1046, 1048, 1049, and 1069, we agree with Petitioner that the
`information at issue is confidential business information. Further, Petitioner
`has filed public, redacted versions of Exhibits 1045, 1046, 1048, 1049, and
`1069 that appear to be tailored narrowly to redact only confidential
`information. Accordingly, we grant the Motion to seal the confidential
`version of Exhibits 1045, 1046, 1048, 1049, and 1069, which shall be
`subject to the Protective Order.
`Exhibits 2033 and 1131
`C.
`As Petitioner notes (Mot. 2), Patent Owner previously moved to seal
`Exhibit 2033 (Paper 32) because it contains sensitive confidential
`information of Patent Owner relating to sales and production volumes, and
`Petitioner did not oppose. 4 We found good cause to seal Exhibit 2033, but
`did not do so previously because we denied entry of the proposed protective
`order. Paper 35, 7–8. Concerning the proposed protective order, we stated,
`“Patent Owner has not adequately justified the proposed modifications to the
`Default Protective Order. Patent Owner’s generalized argument that
`
`4 In related proceedings, Petitioner opposed entry of Patent Owner’s
`proposed protective order, but did not oppose sealing Exhibit 2033. See,
`e.g., IPR2019-01044, Paper 34, 1–2.
`
`5
`
`
`
`IPR2019-01052 (Patent 9,820,429 B2)
`IPR2019-01054 (Patent 10,004,173 B2)
`permitting in-house counsel access to certain highly sensitive information of
`a competitor can be harmful does not justify eliminating an entire category
`of authorized persons for all documents designated confidential.” Id. at 5.
`The parties were authorized to file a revised motion for entry of a protective
`order consistent with the discussion in our Order. Id. at 6.
`Because the parties have now agreed on the Protective Order to
`govern all claims of confidentiality in this proceeding, this Protective Order
`also applies to Exhibit 2033. See Mot., App. A, 1 (“The following Default
`Protective Order will govern the filing and treatment of confidential
`information in the proceeding”). Accordingly, we now seal the confidential
`version of Exhibit 2033 under the terms of the Protective Order. The
`redacted version of Exhibit 2033 will serve as the publicly accessible
`version. Because the Protective Order does not include a designation for
`“Available to Outside Counsel Only,” Patent Owner should file a corrected
`copy of the confidential version of Exhibit 2033 without this designation.
`Alternatively, Patent Owner may expunge Exhibit 2033.
`Exhibit 1131 is a transcript of the deposition of William Hough, taken
`in these proceedings. Mot. 4. Petitioner asserts “Patent Owner contends that
`the testimony contains “confidential Deere information relating to Deere’s
`sales and ‘take rate,’” including confidential information that is also
`contained in Exhibit 2033. Id. Upon reviewing Exhibit 1131, we agree that
`the information at issue is confidential information. Further, Petitioner has
`filed a public, redacted version of Exhibit 1131 that appears to be tailored
`narrowly to redact only confidential information. Accordingly, we grant the
`Motion to seal the confidential version of Exhibit 1131, which shall be
`subject to the Protective Order.
`
`
`6
`
`
`
`IPR2019-01052 (Patent 9,820,429 B2)
`IPR2019-01054 (Patent 10,004,173 B2)
`Exhibit 1135 and Petitioner’s Reply to
`D.
`Patent Owner’s Response
`Exhibit 1135 is the reply declaration of Douglas Prairie filed in
`support of Petitioner’s Reply to Patent Owner’s Response. Mot. 5.
`According to Petitioner, each of Exhibit 1135 and Petitioner’s Reply to
`Patent Owner’s Response “references and discusses the content of the
`exhibits [at issue in this Motion] that Patent Owner contends include Deere
`confidential information.” Id. Upon reviewing Exhibit 1135 and
`Petitioner’s Reply to Patent Owner’s Response, we agree with Petitioner that
`the information at issue is confidential information. Further, Petitioner has
`filed public, redacted versions of Exhibit 1135 and Petitioner’s Reply to
`Patent Owner’s Response that appear to be tailored narrowly to redact only
`confidential information. Accordingly, we grant the Motion to seal the
`confidential versions of Exhibit 1135 and Petitioner’s Reply to Patent
`Owner’s Response, which shall be subject to the Protective Order.
`Notice of Possible Disclosure
`E.
`We remind the parties of the public’s interest in maintaining a
`complete and understandable file history, and thus, that there is an
`expectation that confidential information relied upon in a subsequent
`decision will be made public. See Consolidated Practice Guide at 21–22. In
`addition, confidential information that is subject to a protective order
`ordinarily becomes public 45 days after denial of a petition to institute or 45
`days after final judgment in a trial. Id. A party seeking to maintain the
`confidentiality of the information may file a motion to expunge the
`information from the record prior to the information becoming public. 37
`C.F.R. § 42.56.
`
`
`7
`
`
`
`IPR2019-01052 (Patent 9,820,429 B2)
`IPR2019-01054 (Patent 10,004,173 B2)
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner’s Motion for entry of the Board’s Default
`Protective Order, filed as Appendix A in the Motion, is granted;
`FURTHER ORDERED that Petitioner’s Motion to seal Exhibits 1050,
`1052, and 1054, and to seal the confidential versions of Exhibits 1045, 1046,
`1048, 1049, 1069, 1131, and 1135 and Petitioner’s Reply to Patent Owner’s
`Response, is granted; and
`FURTHER ORDERED that the confidential version of Exhibit 2033
`is sealed under the Protective Order.
`
`
`8
`
`
`
`IPR2019-01052 (Patent 9,820,429 B2)
`IPR2019-01054 (Patent 10,004,173 B2)
`PETITIONER:
`Grant K. Rowan
`Mary V. Scooter
`Natalie Pous
`WILMER, CUTLER, PICKERING, HALE AND DORR, LLP
`Grant.rowan@wilmerhale.com
`Mindy.sooter@wilmerhale.com
`natalie.pous@wilmerhale.com
`
`PATENT OWNER:
`Jay I. Alexander
`Peter P. Chen
`Rajesh D. Paul
`Nicholas L. Evoy
`Richard Rainey
`COVINGTON & BURLING LLP
`jalexander@cov.com
`pchen@cov.com
`rpaul@cov.com
`nevoy@cov.com
`rrainey@cov.com
`
`9
`
`
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